What Is the Difference Between the Madrid Agreement and the Madrid Protocol?

By Robert Palmer

If you are a business owner looking to expand your brand internationally, you may have heard about the Madrid Agreement and the Madrid Protocol. Both of these are international treaties that establish a simplified and cost-effective way for trademark owners to protect their marks in multiple countries. However, there are some important differences between the two that you should be aware of before deciding which one to use.

What is the Madrid Agreement?

The Madrid Agreement was first signed in 1891 and offers a centralized system for registering and managing trademarks. Under this agreement, trademark owners can file a single application with the World Intellectual Property Organization (WIPO) to register their mark in multiple member countries. The application must be filed through the trademark office of the owner’s home country, known as the “office of origin.”

Once WIPO receives the application, it examines it for compliance with formal requirements and then forwards it to each designated country’s trademark office for substantive examination and approval or rejection. If approved, the mark is granted protection in each designated country based on that country’s laws and regulations.

Advantages of the Madrid Agreement:

  • A centralized filing system that simplifies the process of obtaining international trademark protection
  • Cost savings compared to filing separate applications in each individual country
  • The ability to add additional countries to an existing registration through subsequent filings

What is the Madrid Protocol?

The Madrid Protocol was established in 1989 as an update to the Madrid Agreement. It offers many of the same benefits as its predecessor but has some key differences.

Under this protocol, trademark owners can file a single international application with WIPO instead of filing separate applications through their home country’s trademark office. This means that businesses from non-member countries can also take advantage of this system.

Like under the Madrid Agreement, once WIPO receives the application, it forwards it to each designated country’s trademark office for substantive examination and approval or rejection.

Advantages of the Madrid Protocol:

  • A simplified process for obtaining international trademark protection
  • Cost savings compared to filing separate applications in each individual country
  • The ability to add additional countries to an existing registration through subsequent filings
  • The ability for businesses from non-member countries to use the system

Differences between the Madrid Agreement and Madrid Protocol

While both agreements offer a streamlined process for obtaining international trademark protection, there are some key differences between the two:

  • Filing requirements: Under the Madrid Agreement, applications must be filed through the trademark office of the owner’s home country. Under the Madrid Protocol, applicants can file directly with WIPO.
  • Coverage: The Madrid Agreement covers fewer countries than the Madrid Protocol.

    As of 2021, there are 107 member countries under the Agreement and 124 member countries under the Protocol.

  • Flexibility: The Madrid Protocol is generally considered more flexible than the Madrid Agreement. For example, under the Protocol, applicants can modify their list of designated countries up until registration is granted.
  • Certification requirements: Some countries require certification from their national trademark office before granting protection under the Madrid Agreement. This requirement does not exist under the Madrid Protocol.

Final Thoughts

The decision of whether to use the Madrid Agreement or Madrid Protocol ultimately comes down to your specific business needs and goals. Both agreements offer benefits and drawbacks, so it’s important to carefully consider your options before making a decision. Consult with a trademark attorney who can help guide you through the process and ensure that your trademark is protected in the countries where you need it most.